As the modern day, tech-enabled consumer heavily relies on search engines to find products and services, the ways trade marks are used—or misused—online raise new legal questions.
One key development is the rise of search engine advertising programs, like Google’s AdWords, where businesses purchase keywords relevant to their products and services so that their advertisements show up as the first search results for these keywords. This setup provides valuable opportunities for businesses to increase their brand visibility but also creates challenges for the courts. However, when a business uses a competitor’s name as a keyword, questions arise as to whether this constitutes trade mark infringement or passing off.
The recent High Court case of East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2024] SGHC 102 (“East Coast Podiatry”) is Singapore’s first decision on trade mark infringement and passing off involving “keyword” use in search engine advertising.
Case Facts
Both parties in the case operate podiatry clinics in Singapore. The claimant, East Coast Podiatry Centre Pte Ltd, owns registered trade marks that include the words “East Coast Podiatry”. The defendant, Family Podiatry Centre Pte Ltd, used Google Ads to display advertisements containing phrases like “east coast podiatry”, among others.
Key Observations & Findings
In East Coast Podiatry, the Court ultimately found that there was no likelihood of confusion, and therefore no infringement and passing off. This finding was arrived at based on an assessment of the presentation of the defendant’s advertisement as a whole.
The Court observed that the URL in the defendant’s Google Ad—familypodiatrycentre.com—was different from “East Coast Podiatry”, which could help users recognise that the site belonged to a separate entity. Further, the court emphasised that once users clicked on the defendant’s Google advertisement, they would be automatically redirected to the defendant’s website, which prominently displayed its branding (“Family Podiatry Centre”). There was no mention of “East Coast Podiatry” on the defendant’s website.
The Court concluded that these factors meant users would not likely be confused into thinking that the defendant’s site was associated with the claimant, hence there was no infringement. For similar reasons, the court also dismissed the claim under the tort of passing off, as there was no likelihood of confusion.
Concluding Remarks
East Coast Podiatry offers valuable insights for businesses using Google Ads in Singapore. While simply using a competitor’s trade mark as a keyword does not automatically constitute trade mark infringement, brand owners should exercise caution in ensuring that other advertisement elements—such as the URL or content on the landing page— do not create a likelihood of consumer confusion as to the origin of their goods or services.
While the claims of trade mark infringement and passing off were unsuccessful in the present case, the Court ultimately stressed that this outcome was a fact-specific one. Importantly, East Coast Podiatry does not set a blanket rule for all online advertising cases; similar advertising practices may instead be found to be infringing in future cases with different facts. Businesses must uphold transparency in their display of internet advertisements so as to comply with legal standards and avoid consumer confusion.